The Complainant is Royal Forex Ltd., Cyprus, represented by Taylor Wessing, Germany.
The Respondent is Jose Luis Soriano, Spain.
The disputed domain name <roinvestingtestafa.com> is registered with Automattic Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2020. On September 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 7, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 11, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2020. The Respondent sent an email communication to the Center on October 8, 2020, providing the contact details of his legal counsel.
The Center appointed Luca Barbero as the sole panelist in this matter on October 14, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is Royal Forex Ltd., a Cyprus investment firm that is authorized and regulated by the Cyprus Securities and Exchange Commission.
The Complainant offers its investment services, particularly Foreign Exchange Market Trading (also known under the acronym “Forex”) and Contracts for Difference Trading (CFD Trading), under the trade name “ROinvesting”.
The Complainant’s trading platform had formerly been operated under the name “GMO Trading” and the website “www.GMOtrading.com” but, since the name went in conflict with an earlier European Union Trade Mark registration for GMO, following the filing of an opposition by the owner of such earlier trademark before the European Union Intellectual Property Office (“EUIPO”), the Complainant decided to change its brand strategy and registered the trademark ROINVESTING.
The Complainant has provided evidence of ownership of the following trademark registrations:
- European Union Trade Mark registration No. 018090423 for ROINVESTING (work mark), filed on July 2, 2019 and registered on November 5, 2019, in class 36;
- International trademark registration n. 1514337 for ROINVESTING (word mark), registered on December 16, 2019 in class 36;
The Complainant is also the owner of the domain name <roinvesting.com>, which was registered on July 13, 2018 and is used by the Complainant to promote its services under the trademark ROINVESTING.
The disputed domain name <roinvestingtestafa.com> was registered on April 15, 2020 and is pointed to a criticism website about the Complainant and its services, displaying also, in internal pages, sponsored banners related to third-party commercial websites.
The Complainant contends that disputed domain name <roinvestingtestafa.com> is confusingly similar to the trademark ROINVESTING in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the letter “t”, the generic term “estafa” (which in Spanish means “fraudster”) and the generic Top-Level Domain “.com”.
The Complainant highlights that the use of the letter “t” and the term “estafa” is not sufficient to eliminate the likelihood of confusion and that the Respondent purposely used the Complainant’s trademark in order to make sure that its website would be found by any Internet user searching the term “roinvesting”, using its website to the detriment of the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant has never conceded any license, nor has it granted any authorization to the Respondent for the use of its trademark or to register a domain name including the word “roinvesting”.
Moreover, the Complainant highlights that, despite the Respondent having been a former client of the Complainant, there is no other relation between the parties and the Respondent is in no way entitled to use the Complainant’s trademarks.
The Complainant further states that the Respondent is not using the disputed domain name as a legitimate criticism site but is instead posting allegations that are not genuinely fair, but misleading and false, making unfounded assertions in a way that can be described as abusive criticism which is neither objective nor in any way justifiable.
Furthermore, the Complainant asserts that the content of the website does not present any editorial activity and the Respondent does not objectively address and discuss facts, but solely aims to derogatorily portray the Complainant as a fraudster by making mere allegations.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent has registered the disputed domain name solely for the purpose of disrupting the Complainant’s business.
The Complainant emphasizes that, by choosing a domain name which translates as “roinvesting fraudster” and aggressively accusing the Complainant of scamming its clients, the Respondent explicitly states that the Complainant is actively committing a crime and that it wants existing and potential new clients to avoid the Complainant’s trading platform, hereby disrupting its business.
The Complainant underlines that, by registering the disputed domain name, the Respondent intended to create a likelihood of confusion between the Complainant’s trademarks and the disputed domain name and that, by including the trademark ROINVESTING, the Respondent is aiming at attracting potential clients of the Complainant.
The Complainant informs the Panel that, in registering the disputed domain name, the Respondent also thoroughly concealed its identity, which leads to the conclusion that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions, but only sent an email in Spanish to the Center following the deadline on October 8, 2020, requesting that “for any clarification the Center should contact his lawyer”.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has established rights over the trademark ROINVESTING based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 8 to the Complaint.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to Section 1.8 of the WIPO Overview 3.0, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Moreover, as stated in Section 1.13 of the WIPO Overview 3.0, “a domain name consisting of a trademark and a negative or pejorative term (such as <[trademark]sucks.com>, <[trademark]구려.com>, <[trademark]吸.com>, or even <trademark.sucks>) is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element. The merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements. Panels have thereby observed that permitting such standing avoids gaming scenarios whereby appending a “sucks variation” would potentially see such cases fall outside the reach of the UDRP”.
In the case at hand, the Panel finds that the disputed domain name, which is constituted of the Complainant’s trademark in combination with the letter “t” and the term “estafa” (“fraud” in Spanish), is confusingly similar to the Complainant’s trademark for the purpose of satisfying standing under the first element.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy.
It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. However, a respondent’s default would not by itself mean that the complainant is deemed to have prevailed. See section 4.3 of the WIPO Overview 3.0.
In cases where a good faith defence is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to establish its case. See section 4.3 cited above.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant besides the Respondent having been a client of the Complainant before registering the disputed domain name. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Jose Luis Soriano, might be commonly known by the disputed domain name.
The Complainant states that the Respondent pointed the disputed domain name to a website displaying content apt to discredit the Complainant and its services. Nevertheless, the Panel notes that the Respondent was a client of the Complainant before registering the disputed domain name, and that the disputed domain name is pointed to a criticism website about the Complainant and its services.
The Panel notes that in the present case the disputed domain name includes a derogatory term. As described in section 2.6 of the WIPO Overview 3.0, UDRP, panels have recognized that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy. In cases where the disputed domain name comprises the trademark plus a derogatory term, UDRP panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name for a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. See section 2.6.3 of the WIPO Overview 3.0.
Here, the disputed domain name comprises the mark ROINVESTING, the letter “t” and the derogatory term “estafa” (the Panel notes that the letter “t” along the word “estafa” can be understood as “defrauding you” in English). The content of the website at the disputed domain name includes the experience of the Respondent with the Complainant, a section called “Opiniones” allowing users to post their opinion and a field with news. The Panel finds that the main purpose of the website is a prima facie criticism site.
The Panel also notes that the criticism website at the disputed domain name is displaying, in some internal pages, sponsored banners related to third-party websites. The Panel finds that the use of some advertising banners is incidental to the main purpose of the website as the Respondent does not seem to be attempting to profit from the Complainant’s trademark and goodwill but rather criticizing the Complainant. As reflected in the WIPO Overview 3.0, section 2.6.3 cited above, an incidental commercial activity has been found permissible in circumstances where, at least prima facie, the respondent seems to be genuinely criticizing the complainant. See also, Amylin Pharmaceuticals, Inc. v. Watts Guerra Craft LLP, WIPO Case No. D2012-0486.
The above mentioned circumstances leads the Panel to find that the Respondent is making a legitimate or fair use of the disputed domain name for the purposes of the Policy.
Therefore, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that the Complainant proves that all the three elements of the Policy are present in its case.
Noting that the Complainant has failed to establish the second element of the Policy, the Panel finds that it is not necessary to discuss the third element of the Policy, and refers to the analysis on the use of the disputed domain name under the second element.
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Sole Panelist
Date: November 17, 2020